Trademark For Amazon
Amazon’s Brand Registry is an important tool for the intellectual property protection of Amazon sellers. Amazon sellers with independent brand names are now able to protect those brands’ names (at least on the Amazon platform) by registering the seller’s brand name with Amazon’s Brand Registry. To register your brand name with the Amazon Brand Registry, the seller must supply trademark information about the brand. Until recently, Amazon required only that the seller supply Amazon with the trademark application number. At the United States Patent and Trademark Office (the USPTO), this number is referred to as the Trademark Application Serial Number. This allowed Amazon brand owners to have their brands filed as trademarks at the United States Trademark Office and then immediately use the Trademark Application Serial Number to have their brand registered on the Amazon Brand Registry.
Because the USPTO provides the Trademark Serial Number immediately upon submission of a trademark application, this meant that Amazon sellers could register their trademarks with the Amazon Brand Registry on the same day their trademarks were filed with the Trademark Office. Unfortunately for Amazon brand owners, that is no longer the case. Amazon’s current policy is that only registered trademarks are eligible for protection on the Amazon Brand Registry. Because Amazon will only recognize brands that are actually registered trademarks (not merely filed trademark), brand owners are now scrambling to get their brands registered as proper trademarks at the United States Trademark Office. Obtaining a trademark registration these days is taking between 8 and 13 months (as opposed to obtaining a Trademark Serial Number, which is obtained immediately upon submission of the trademark application).
Consequently, Amazon’s new requirement that a brand is a registered trademark to be eligible for the Brand Registry, raises several issues for Amazon sellers. First, Amazon’s new Brand Registry requirement now compels Amazon dealers to plan well in advance of launching a brand. While the old requirements would allow brand owners to register with Amazon’s Brand Registry merely upon filing a trademark application with the United States Trademark Office, the registration requirement means that, in a best-case scenario, the earliest an Amazon brand owner would be able eligible for protection the Brand Registry would be about 8 months after filing the trademark application with the USPTO.
Second, trademark clearance searches are now absolutely critical for amazon brand owners. To understand why Amazon’s new trademark registration requirement for Brand Registry necessitates clearance searches before selecting a brand name, a little background on the trademark registration process is needed. The following is a watered-down summary of the trademark registration process. (1) A trademark is filed with the United States Patent and Trademark office. The application includes the proposed trademark (or “brand”) and also describes what products will be sold under the brand. (You cannot obtain a trademark for a name in a vacuum – it always needs to be tied to particular products. ) (2) About 3-4 months after the submission of the application, the trademark application is assigned to a trademark attorney at the USPTO, who reviewed the application for formalities.
Importantly for the purposes of this discussion, the examining attorney conducts trademark conflicts searches (clearance searches) to ensure that the trademark is available and that it does not conflict with other earlier filed trademarks. (3) Assuming no conflicts, the Trademark Office would publish the trademark and then register it, about 8 months after the filing(assuming the trademark was filed as an IN USE trademark, discussed below). With Amazon’s old policy, brand owners did not have to concern themselves with the probability that the Trademark Office would ultimately register their trademark. As long as a Trademark Serial Number was obtained, that (without anything more) could be used to get protection on the Amazon Brand Registry. However, now that Amazon requires a Trademark Registration Number (which is only obtained if the trademark is ultimately registered), Amazon sellers have no choice but to have proper due diligence done on their proposed brand names early in the process to avoid refusals and long delays at the United States Trademark Office.
Third, Amazon sellers are now searching for any way possible to have their trademark applications expedited at the USPTO so that a trademark registration number will be obtained as soon as possible. There is no trademark expedited service for trademark applications at the United States Trademark Office. However, there are things that can be done to increase the speed of the trademark examination process, thereby obtaining a registration sooner.
First, having an experienced trademark attorney handle the trademark application will most often result in obtaining a trademark registration sooner. This minimizes the chances of a trademark opposition or cancellation. Trademark attorneys can often identify seemingly small issues in the application that can cause significant, multi-month, delays in your registration process. Second, filing your trademark as an IN USE trademark (this is called a 1(a) basis for registration)significantly shortens the registration process. An experienced trademark lawyer can also handle any office actions that may occur and provide a detailed response to the objection.
To file your trademark as an IN USE trademark (rather than an INTENT TO USE trademark), your trademark must actually be in use and you must have legitimately sold some of the products after you began using the trademark in connection with those products. As an Amazon seller, filing a brand as an IN USE trademark is not difficult and should be considered in order to save significant time on the registration process. While there is no set amount of time, we estimate that filing as IN USE instead of INTNT TO USE will cut at least 3 months off of the registration timeline. (Of course, there are reasons why you may wish to file your trademark as INTENT TO USE instead of as IN USE. )
Finally, to avoid delays at the USPTO it is extremely important to properly word your description of goods. A huge number of applications are significantly delayed because of very small issues relating to the description of products – and these issues are often not intuitive and are unlikely to be recognized by non-trademark attorneys. Amazon’s Brand Registry offers a great way of protecting your brand on the Amazon platform. With Amazon’s new requirement, you must provide a registration number (not merely an application number) to get Brand Registry protection.
Because of the many potential hurdles in the trademark registration process, brand owners now need to move quickly and early to obtain a trademark registration. In addition, delays at the Trademark Office are now much more detrimental to Amazon brand owners, as they can only get their brands on the Brand Registry when they complete the registration process and obtain a registration number. Obtaining experienced legal counsel for the trademark clearance and application often saves many months of delay and is highly recommended if your objective is to obtain registration as soon as possible.